BLUE AIR, INC. v. SOLEUS MOBILITY

The opinion of the court was delivered by: JOAN H. LEFKOW, District Judge

MEMORANDUM OPINION AND ORDER

Plaintiff, BlueAir, Inc. ("BlueAir"), filed this action against
defendants, Soleus Mobility, Inc. ("Soleus") and MJC America,
Ltd. ("MJC"), for trade dress infringement and unfair competition
under the Lanham Act, 15 U.S.C. § 1125, and the Illinois
Deceptive Trade Practices Act, 815 ILCS 510/1 et seq. Before
the court is BlueAir's motion for a preliminary injunction. The
court held a hearing on the motion on June 10, 2004. For the
reasons stated below, the motion is denied.

FACTS

"Most air purifiers are plain ugly and by preference you would
want to hide them somewhere." (Website for Allergy Buyers Club,
Pl. Ex. 9, at 3.) In the 1980s, Bengt Rittri, the founder and
President of BlueAir, set out to change this. Reversing the
principle that form follows function, Rittri hired a New York
designer to design a cabinet for an air purifier that was
"pleasing in overall image and appearance." (Pl. Mot., at 3.)
Only then did Rittri design "the layout of the internal working parts  which were then fitted
into the cabinet differently for each model" of Blue Air
purifier. (Id. at 2.) Since at least February, 1998, BlueAir
has imported and sold the resulting "contemporary," "sleek,"
"distinctive" air purifiers in the United States under the
BlueAir trademark. (Id. at 2, 3.) BlueAir markets its purifiers
in such top stores as Sharper Image, Bed Bath and Beyond,
Brookstone, Linens & Things, and others. BlueAir's 501 model
costs around $600.

Rittri's efforts have not gone unnoticed. BlueAir's purifiers,
including the 501 model and its 301, 402, and 601 mates, have
been lauded for their "distinctive design and appealing
presentation." (Id. at 2.) In fact, the 402 model has received
several European design awards and is featured in a permanent
design exhibit at the National Museum in Stockholm, Sweden.
(Id.) The hallmarks of BlueAir's "sleek, stylish, and
contemporary look" are

3. Circular depression with centered clear bulb at
the upper left of the front panel, with the "Blue
Air" name beside it;

4. Horizontal detail line extending across most of
the front panel;

5. Dark castors under the base; and,

6. Dark, planar edge panels joining the front and
back panels at top and sides.

(Id.) None of the perhaps two dozen other air purifiers
appearing in on-line U.S. catalogs has this combination of
elements. Thus, it is not difficult to understand Rittri's dismay when he
discovered that MJC*fn1 was preparing to market the Soleus
Air SA-550 ("SA-550"), an air purifier that bears a remarkable
resemblance to the BlueAir 501 purifier. Like the BlueAir 501,
the SA-550 has slightly outwardly curved, solid, rectangular
putty-colored front and rear panels, a horizontal detail line
extending across the front panel, dark castors under the base,
and dark, planar edges joining the front and back panels at the
top and sides. MJC's Secretary, Jimmy Loh ("Loh"), admits that
MJC copied certain aspects of the BlueAir 501's design. MJC's
promotional material even touts the SA-550's "award-winning
Swedish design."*fn2 (Pl. Ex. 8.) However, MJC insists that
the SA-550 differs from the BlueAir 501 in several material
respects, including

1. the SA-550 has a "soft-touch" control on top of
the unit with a remote control, while the BlueAir 501
has a manual control on the right side of the unit;

2. the SA-550 has a circular depression with an
infrared sensor at the upper left of the front panel,
with the name "Soleus" next to the depression, while
the BlueAir 501 has a circular depression with an
"on" indicator lamp at the upper left of the front
panel, with the name "BlueAir next to the depression;

3. the SA-550 has ultraviolet tubes, while the
BlueAir 501 does not;

4. the SA-550 has a one-way airflow output, while the
BlueAir 501 has a three-way air output;

5. the SA-550 has a five-way airflow input, while the
BlueAir 501 has a three-way airflow input;

6. the dimensions of the models are not identical; 7. the SA-550 has a removable power cord on the right
side, while BlueAir has a power cord on the bottom.

(Def. Resp., at 3.) The SA-550 has a retail price of
approximately $400.

At the hearing on the motion for preliminary injunction, Rittri
testified to two other facts relevant here. First, Rittri
testified that BlueAir has engaged in "co-branding" campaigns
with other manufacturers and/or retailers of air purifiers,
including Sharper Image, Aerus, Gesundheit, and Lux. Some of the
air purifiers marketed as part of these co-branding campaigns did
not bear the BlueAir trademark but were instead labeled with the
mark of the co-branding partner. Others bore both the BlueAir
trademark and the name of the co-branding partner. (Transcript at
42.) Second, Rittri testified that he had read studies indicating
that buyers of air purifiers spend more time researching their
potential purchase than buyers of almost any other product.
(Transcript at 62, 89.)

DISCUSSION

The party requesting a preliminary injunction in a trade dress
or unfair competition case has the burden of demonstrating (1) a
reasonable likelihood of success on the merits of the underlying
claim; (2) no adequate remedy at law; and, (3) irreparable harm
if the injunction is not granted. Jones v. InfoCure Corp.,
310 F.3d 529, 534 (7th Cir. 2002). If an evaluation of these
three points indicates that an injunction might be proper, the
court then weighs the potential harms to the parties and takes
into account whether the public interest will be disserved if the
injunction issues. Id. "A preliminary injunction is an
extraordinary remedy that should not be granted unless the
movant, by a clear showing, carries the burden of persuasion."
Chicago Dist. Council of Carpenters Pension Fund v. K & I Construction,
Inc., 270 F.3d 1060, 1064 (7th Cir. 2001).

A. Reasonable Likelihood of Success on the Merits

Section 43(a) of the Lanham Act gives a producer of a product a
cause of action for the use by any person of "any word, term,
name, symbol, or device, or any combination thereof . . . which . . .
is likely to cause confusion . . . as to the origin,
sponsorship, or approval of his or her goods."
15 U.S.C. § 1125(a). The breadth of the confusion-producing elements recited
as actionable under § 43(a) has been held to include not just
word marks, such as "Nike," and symbol marks, such as Nike's
"swoosh" symbol, but also "trade dress"  a category that
originally included only the packaging, or "dressing," of a
product, but has been expanded to encompass the design of a
product. Wal-Mart Stores, Inc. v. Samara Brothers, Inc.,
529 U.S. 205, 209 (2000); see also TrafFix Devices, Inc. v.
Marketing Displays, Inc., 532 U.S. 23 (2001); Eco
Manufacturing LLC v. Honeywell International, Inc.,
357 F.3d 649 (7th Cir. 2004). Trade dress refers to "the total image of a
product, including size, shape, color combinations, graphics,
packaging and label." Badger Meter, Inc. v. Grinnell Corp.,
13 F.3d 1145, 1151 (7th Cir. 1994).

To prevail on a claim of trade dress infringement, a plaintiff
first must show that 1) its trade dress is either inherently
distinctive or has acquired a secondary meaning, and 2) that the
similarity of the defendant's trade dress causes a likelihood of
confusion on the part of consumers as to the source or
affiliation of the products. Thomas & Betts Corp. v. Panduit
Corp., 138 F.3d 277, 291 (7th Cir. 1998). If the plaintiff
successfully establishes these elements, the defendant can still
prevail if the defendant demonstrates that the plaintiff's trade
dress is functional. Id. 1. Inherent Distinctiveness or Secondary Meaning

BlueAir seeks trade dress protection for the overall product
design of its air purifiers. The Supreme Court has held that
product design is not inherently distinctive. Wal-Mart, 529
U.S. at 214 ("In the case of product design, as in the case of
color, we think consumer predisposition to equate the feature
with the source does not exist."). Thus, "product design cannot
be protected under § 43(a) without a showing of secondary
meaning." Id. "`[S]econdary meaning' is acquired when `in the
minds of the public, the primary significance of the product
feature . . . is to identify the source of the product rather
than the product itself.'" Thomas & Betts, 138 F.3d at 291
(quoting Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159,
163 (1995)). Secondary meaning can be established "through direct
consumer testimony, consumer surveys, length and manner of use,
amount and manner of advertising, volume of sales, place in the
market and proof of intentional copying." Id.

BlueAir primarily relies on two of these factors to show that
its trade dress has acquired a secondary meaning: length and
manner of use and proof of intentional copying. First, BlueAir
points out that it has "sold or marketed the trade dress of its
models 401, 501, 402, and/or similar air purifiers in the United
States continuously and exclusively since 1987 via mailed
catalogs . . . and then further for the past 6 years by direct
sales to retailers. . . ." (Pl. Reply, at 2.) BlueAir contends
that its use of its trade dress for more than five years
"provides prima facie proof of secondary meaning." (Id., at
3, citing Thomas & Betts, 138 F.3d at 296.) However, contrary
to BlueAir's assertion, the Seventh Circuit has not held that use
of trade dress for more than five years provides prima facie
proof of secondary meaning. Rather, in Thomas & Betts, the
court held that more than five years' use of trade dress "has
some bearing on the issue of secondary meaning." 138 F.3d at 296. Furthermore, the significance of the
length of use of trade dress depends on the "manner of use."
Id. at 291 (Secondary meaning can be established "through . . .
the length and manner of use.").

Here, BlueAir's use of its trade dress for the past six years
has not been "exclusive." BlueAir has engaged in "co-branding"
campaigns with other manufacturers and/or retailers of air
purifiers, including Sharper Image, Aerus, Gesundheit, and Lux.
Some of the purifiers marketed as part of these co-branding
campaigns did not bear the BlueAir name but were instead labeled
with the mark of the co-branding partner. Others bore both the
BlueAir trademark and the name of the co-branding partner. Though
no court has addressed the issue, legal scholars have argued that
such co-branding may result in mixed consumer perception as to
the source of the product, diluting the secondary meaning of a
products trade dress. See Donald R. Kirk, Franchise
Dual-Branding: The Irony of Association, 10 DePaul Bus. L.J. 1
(1997) ("`[D]ual-branding' promises to blur the consumers'
perception of where a product or service that they are buying
originates."); Ann Hurwitz, Co-Branding: Managing Franchise
Brand Associations, 20 Okla. City. U.L. Rev. 373, 379 (1995)
("[C]o-branding may result in mixed consumer perception, leading
to confusion and, eventually, a possible diminution in value of
participating brands."). The court agrees. BlueAir has allowed
its air purifiers to be marketed bearing the name of other
brands, sometimes only bearing the name of another brand Such
co-branding could only weaken a consumer's perception of the
source of the product. Thus, while BlueAir's use of its trade
dress for more than five years is not irrelevant, the court finds
its significance minimal here.

BlueAir's second argument that its trade dress has acquired
secondary meaning is that MJC intentionally copied BlueAir's
trade dress. BlueAir contends that "proof of Soleus's slavish, `Chinese' copying" (an unfortunate choice of words,
given their suggestion of an ethnic slur) of BlueAir's trade
dress "supports a presumption that the plaintiff's trade dress is
both distinctive and has a secondary meaning." (Pl. Reply, at 7,
5.) In support of this contention, BlueAir cites Schwinn Bicycle
Co. v. Ross Bicycles, Inc., 870 F.2d 1176, 1182 n. 13 (7th
Cir. 1989). However, in Schwinn, the court explicitly held that
proof of intentional copying does not create a presumption of
secondary meaning. The court stated,

[s]ome courts have employed a presumption of
"secondary meaning" where the second manufacturer of
a product deliberately and closely copies the trade
dress of the first manufacturer of a product. We have
not gone so far; rather, proof of intentional copying
is probative evidence of "secondary meaning."

Given that the Supreme Court has stated that "product design
almost invariably serves purposes other than source
identification," Wal-Mart, 532 U.S. at 213, BlueAir bears an
especially high burden of persuading the court that its product
design has acquired a secondary meaning. It has failed to meet
that burden. Considering the evidence in its entirety, the court
finds that BlueAir has not demonstrated that "in the minds of the
public, the primary significance of [BlueAir's trade dress] is to
identify the source of the product rather than the product
itself." Thomas & Betts, 138 F.3d at 291 (quoting Qualitex
Co. v. Jacobson Prods. Co., 514 U.S. 159, 163 (1995)). As
discussed above, BlueAir's use of its trade dress for more than
five years has "some bearing on the issue of secondary meaning."
Thomas & Betts, 138 F.3d at 296. However, the probative value
of this evidence is slight given BlueAir's co-branding of its air
purifiers. Furthermore, the significance of MJC's intentional
copying of BlueAir's product design is minimal in the absence of some evidence that the public viewed
BlueAir's design as signifying "the source of the product rather
than the product itself." As the Supreme Court noted in
TrafFix,

Trade dress protection must subsist with the
recognition that in many instances there is no
prohibition against copying goods and products. In
general, unless an intellectual property right such
as a patent or copyright protects an item, it will be
subject to copying. As the Court has explained,
copying is not always discouraged or disfavored by
the laws which preserve our competitive economy.
Allowing competitors to copy will have salutary
effects in many instances.

532 U.S. at 29 (internal citations omitted). Thus, BlueAir has
failed to establish that its trade dress has acquired a secondary
meaning.

2. Likelihood of Consumer Confusion

BlueAir has likewise failed to show that the similarity of the
MJC's trade dress "causes a likelihood of confusion on the part
of consumers as to the source or affiliation of the products."
Thomas & Betts Corp., 138 F.3d 277, 291 (7th Cir. 1998). Among
the factors considered by courts in determining the likelihood of
consumer confusion are (1) the similarity of the trade dresses;
(2) the area and manner of concurrent use; (3) the degree of care
likely to be used by consumers; (4) the strength of plaintiff's
trade dress; (5) actual confusion; and (6) intent of the
defendant to pass off its product as that of the plaintiff.
Thomas & Betts, 138 F.3d at 296. When considering whether there
is a likelihood of confusion, none of these factors considered
alone is dispositive, and the weight to be accorded to each
varies from case to case. Id.

MJC suggests that there are significant differences between the
SA-550 and the BlueAir 501. The court disagrees. Whatever
differences exist between the two air purifiers, they are minor
in comparison to the overwhelming similarities. Neverthless,
Rittri testified that he had read studies indicating that consumers of air purifiers spend
more time researching the products than almost any other product.
If this is true, such consumers are unlikely to be confused as to
the source or affiliation of the air purifiers they are buying.
BlueAir's unsupported contention that consumers "may exercise a
great deal of care but are likely to be confused nonetheless" is
unconvincing. While it is certainly possible that consumers could
be confused, it seems likely that consumers who spend the most
time researching a product are the least likely to be confused.

BlueAir also contends that, because MJC admittedly copied
BlueAir's product design, MJC "intended to pass off its air
purifier as BlueAir's." (Pl. Mot., at 7.) This is simply
conjecture. It is equally likely that MJC noticed that BlueAir's
air purifiers were selling well, inferred that customers liked
air purifiers with a "sleek, stylish, and contemporary look," and
decided to climb on the bandwagon. "We call that competition, not
bad faith, provided there is no intention to confuse." Libman
Co. v. Vining Industries, Inc., 69 F.3d 1360, 1363 (7th Cir.
1995). BlueAir has presented no evidence that MJC intended to
confuse consumers or that customers were in fact confused.

Finally, the trade dresses of MJC and BlueAir have different
"areas and manners of concurrent use." BlueAir and MJC use
substantially different marketing channels. BlueAir markets its
501 model to "high-end" retailers and consumers, while MJC sells
the SA-550 to nationwide "mass merchant" retailers for a retail
price of approximately $200 less than the BlueAir 501. Though
BlueAir has indicated that it plans to enter the "mass market"
very soon, it has not yet done so, and the court will not
speculate about what will happen if and when it does. Thus,
BlueAir has failed to make a clear showing that consumers are
likely to be confused as to the source or affiliation of the
products. CONCLUSION

Given that BlueAir has failed to establish a reasonable
likelihood of success on the merits, the court need not examine
the other elements required for a preliminary injunction.
BlueAir's motion for a preliminary injunction is denied [#2-2].

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